Ex Parte Ziech

Board of Patent Appeals and Interferences

Mar 31, 2008

10702785 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES F. ZIECH
____________

Appeal 2008-4399
Application 10/702,785
Technology Center 3600
____________

Decided: March 31, 2008
____________

Before WILLIAM A. PATE, III, HUBERT C. LORIN, and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
James F. Ziech (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of Claims 1-3, 5, 8, 9, 11, and 13-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). Prior to this appeal, Claims 6
and 12 were canceled, and Claims 4, 7, and 10 were indicated as containing
allowable subject matter.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention is a differential system having a one-piece
differential carrier which houses an input assembly, a power divider, a
hollow pinion gear, and a wheel differential. The input assembly, power
divider and pinion gear are rotatingly supported within the carrier by a
maximum of three bearings. The system also includes a through shaft that is
concentric with the hollow pinion gear, but, by operation of the power
divider, rotates at a different speed than the pinion gear. In one
embodiment, the carrier supports an outer pinion bearing and an input
bearing.
Claims 1 and 8, reproduced below, are representative of the subject
matter on appeal:
1. A drive system, comprising:

a one-piece differential carrier housing an input
assembly, a power divider, a hollow pinion gear
and a wheel differential, said carrier enclosing said
hollow pinion gear; and

a through shaft concentric with, but rotating at
different speeds from, said hollow pinion gear via
said power divider;

wherein said input assembly, said power divider
and said pinion gear are rotatingly supported
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within said one-piece differential carrier by a
maximum of three bearings.

8. A differential system, comprising:

a one-piece differential carrier housing an input
assembly, a power divider, a hollow pinion gear
and a wheel differential, said one-piece differential
carrier supporting an outer pinion bearing and an
input bearing, and said carrier enclosing said
hollow pinion gear; and

a bearing cage attached within said one-piece
differential carrier, said bearing cage supporting an
inner pinion bearing;

wherein said input assembly, said power divider
and said hollow pinion gear are only rotatingly
supported by said outer pinion bearing, said inner
pinion bearing and said input bearing.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Shealy US 3,532,183 October 6, 1970
Asberg US 4,273,391 June 16, 1981
Oates US 6,840,882 B2 January 11, 2005

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The following rejections are before us for review:
1. Claims 1-3 and 5 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Oates.
2. Claims 8, 9, 11, 14-16 and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the Shealy patent.
3. Claims 13 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shealy in view of Asberg.
ISSUE
A first issue before us is whether Appellant has shown that the
Examiner erred in finding that the subject matter of Claims 1-3 and 5 is
anticipated by the Oates patent. A second issue before us is whether
Appellant has established that the Examiner erred in concluding that Claims
8, 9, 11, 14-16, and 18-20 are obvious, and therefore unpatentable, over the
Shealy reference. A third issue before us is whether Appellant has shown
that the Examiner erred in concluding that Claims 13 and 17 are obvious
over the Shealy reference, in view of the Asberg reference.
In particular, we must determine if Appellant has demonstrated that
the Examiner has failed to establish that the Oates patent identically
discloses each and every element set forth in Claims 1-3 and 5, including a
one-piece carrier that houses, inter alia, a wheel differential. In addition, we
must determine, with respect to the remaining claims, if Appellant has
demonstrated that the Examiner erred in concluding that it would have been
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obvious to form the differential carrier disclosed in the Shealy patent as a
one-piece carrier.

FINDINGS OF FACT
The following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. The Oates patent discloses a main differential cover 88 which has a
hollow pinion gear and a power divider 40 disposed in an interior thereof.
(Oates, Figs. 3A, 3B; col. 4, ll. 4-40).
2. Main differential cover 88 of Oates covers a portion of input
assembly 68, extending 360° around a portion thereof, and covers a portion
of wheel differential 30. (Oates, Figs. 1, 3A, 3B; col. 4, ll. 34-40).

PRINCIPLES OF LAW
Anticipation of a claim exists when each and every element set forth
in the claim is found, either expressly or inherently described, in a single
prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987); In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Once a
prima facie case of anticipation has been established, the burden shifts to the
Appellant to prove that the prior art product does not necessarily or
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inherently possess the characteristics of the claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
Patent application claims are given their broadest reasonable
interpretation during the application process, for the simple reason that
before a patent is granted the claims may be readily amended, for the
purpose of distinguishing cited references, or in response to objections raised
under Section 112, as part of the examination process. Burlington
Industries, Inc. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). This
broadest reasonable construction is to be assessed in light of the
specification as it would be interpreted by one of ordinary skill in the art.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S.Ct. at 1734 (Graham factors continue to define the inquiry
that controls).
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Per se rules directed to the alleged obviousness of a claimed invention
are looked upon with disfavor. See, In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995)(reliance on per se rules of obviousness that eliminate the need for
fact-specific analysis of claims and prior art is legally incorrect).

ANALYSIS
Anticipation Rejection of Claims 1-3 and 5
Appellant does not argue the patentability of Claims 2, 3, and 5,
separate and apart from independent Claim 1. Accordingly, these claims
will stand or fall with Claim 1, and we will select Claim 1 as being
representative of this group. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner asserts that the Oates patent discloses each and every
element set forth in Appellant’s Claim 1. In particular, main differential
cover 88 in Oates is said by the Examiner to meet the claim element calling
for a “one-piece differential housing”. (Answer 3, 8).
Appellant counters that Oates discloses a two-piece differential cover
made up of main differential cover 88 and interaxial differential (IAD) cover
78. (Appeal Br. 6). Directly addressing the Examiner’s position that the
main differential cover 88 alone is regarded as a one-piece differential
carrier as claimed, Appellant contends that, using this interpretation, the
main differential cover does not meet other limitations set forth in Claim 1.
Specifically, Appellant urges that the main differential cover 88 does not
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house the input assembly 68, whereas Claim 1 requires that the differential
carrier house the input assembly of the drive system. (Reply Br. 2).
Initially, we find that Appellant has not persuaded us that the
Examiner erred in finding that main differential cover 88 constitutes, in
general, a one-piece differential carrier. Claim 1 is utterly devoid of any
terms or limitations which structurally define the differential carrier, other
than its physical relationship to or positioning with respect to other claim
elements. (Appeal Br., Claims Appendix). Giving the term its broadest
reasonable interpretation, the claimed differential carrier is a generic
structure that houses certain other claimed components, and has rotatingly
supported therewithin a subset of those claimed components. In contending
that the Oakes differential carrier is a two-piece assembly made up of main
differential cover 88 and IAD cover 78, Appellant does nothing more than
present his own interpretation of the construction of the Oakes device,
without taking into account the breadth of the term “differential carrier” as
set forth in Claim 1.
Turning to the other aspect of Appellant’s assignment of error, we
have the Examiner and Appellant taking differing positions with respect to
whether differential carrier 88 of Oates “houses”1 an input assembly.
(Answer 3; Reply Br. 2). The Examiner, citing to Figure 2b of Appellant’s
drawings, notes that components recited in Claim 1 as being housed by the

1 The term “housing” is used in the claim as a verb, not as a noun.
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differential carrier are not completely surrounded by or covered by the
differential carrier.2 (Answer 10-11). The Examiner thus concludes that the
term “housing” as used by Appellant is to be interpreted as, “substantially
covering an area thereof”. (Answer 11)(emphasis added). Appellant does
not contest this interpretation, and we find it to be reasonable, in view of
Appellant’s illustrated embodiments and attendant written description.
In arguing that the Oates patent does not anticipate the invention in
Claim 1, Appellant unfortunately seizes upon the term “substantially” in the
Examiner’s interpretation, and fails to properly account for the expression,
“an area thereof”. Appellant proffers definitions of “substantially” as
meaning “considerable in quantity” and “being largely but not wholly that
which is specified”. (Reply Br. 2). We do not take issue with those
definitions. Rather, it is Appellant’s argument that, based on those
definitions, main differential cover 88 in Oates does not “’substantially’
cover the input assembly”, that misses the mark.3
Appellant misapplies the interpretation of “housing” in addressing the
construction of the Oates device. Applied correctly, a first item housing a
second item, for example, would mean that the first item substantially covers

2 Appellant, in addition, acknowledges that his “figures may not have
depicted the wheel differential of the present invention entirely within the
carrier”. (Reply Br. 6).
3 Part 68 of Oates is acknowledged by Appellant as being the component
corresponding to its claimed input assembly.
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an area of that second item. In contrast, Appellant’s reading is that the first
item would substantially cover the second item itself, and not just an area
thereof.. This is evidenced in Appellant’s argument that part 88 of Oates,
“terminates well before it substantially covers part 68… . Instead, part 88
barely extends over part 68…”. (Reply Br. 2).
The proper inquiry instead, using the Examiner’s interpretation of
“housing”, is whether the main differential cover 88 in Oates substantially
covers an area of the input assembly 68. Figure 3B of Oates plainly
evidences that main differential cover 88 does substantially cover (i.e.,
extends 360° around) an area of input assembly 68. (Findings of Fact 1,2).
Accordingly, the differential carrier 88 of Oates “houses” the input assembly
68, as required by Claim 1.
This finding is entirely consistent with Appellant’s usage of the term
in describing the relationship of its one-piece differential carrier and the
wheel differential that, according to Claim 1, is “housed” by the differential
carrier. Referring to, for example, Figure 3a of Appellant’s drawings, the
one-piece differential carrier is identified by reference numeral 50. The
wheel differential that is “housed” by the differential carrier is denominated
as 51. (Specification, p. 6, ll. 14-15). To the extent that part 88 “barely
extends” over input assembly 68 in Oates, then it is also the case that
Appellant’s differential carrier “barely extends” over the wheel differential.
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Appellant has not persuaded us that error exists in the rejection of
Claims 1-3 and 5 as being anticipated by the Oates patent. We will
accordingly sustain the rejection.

Obviousness rejection of Claims 8, 9, 11, 14-16, and 18-20
Claims 8 and 14 are independent claims directed to a differential
system and a method for assembling a drive system, respectively. Appellant
presents these claims in four different groupings in his Appeal Brief,
however, the same argument for patentability is presented for all of the
claims. We will take Claim 8 as the representative claim for the purpose of
review.
The single issue joined by the Examiner and Appellant is
straightforward – the Examiner contends that components identified as “A”
and “B” in the annotated version of Figure 3 of Shealy below comprise a
differential carrier as claimed. The Examiner asserts that it would have been
obvious to a person of ordinary skill in the art to produce that two-piece
carrier as a one piece carrier (Answer 5), which modification would fully
meet the claim element requiring a “one-piece differential carrier”.
Appellant argues that this modification would not have been obvious to a
person skilled in the art.

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Figure 3 of the Shealy patent is reproduced below:

Figure 3 depicts, in longitudinal section, an inter-axle differential.
The Examiner relies solely on purported legal precedent in concluding
that constructing the two components (A and B in Fig. 3 above) as a one
piece unit, would have been obvious to a person of ordinary skill in the art.
(Answer 5, 18). Specifically, the Supreme Court case, Howard v. Detroit
Stove Works, 150 U.S. 164 (1893), is cited for the proposition that forming
in one piece an article that has formerly been formed in two pieces and put
together involves only routine skill in the art.
The Examiner likens the instant situation to that in the Howard case,
by stating that, “two adjacent simple mechanical pieces can be formed as a
single piece”, and further states that “[U]sing a one-piece carrier, as opposed
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to a two-piece carrier, is a mere design choice which has been ruled to be
obvious to one of ordinary skill in the art.” (Answer 18).
This ground of rejection is precariously close to the application of a
per se rule to the obviousness determination, replacing a fact-specific
analysis of the claims and the prior art with a supposed precedential rule.
Our reviewing court has cautioned that such an approach is legally
erroneous.
In contrast to the mainly conclusory statements made by the
Examiner, Appellant has presented his own analysis of the prior art Shealy
construction as it relates to the claims at issue. For example, Appellant notes
that, were components A and B in Figure 3 of Shealy formed as a one-piece
component, the exterior surface of the component would have a significant
depression that would likely be an area of stress concentration of exterior
loads. (Reply Br. 4). Appellant further points out that such an area would
potentially be an area at which premature failure would occur. (Id.).
Given the absence of any articulated reasoning with rational
underpinnings directed to the specific prior art and claims at issue, we are
persuaded that the rejection of Claims 8, 9, 11, 14-16, and 18-20 under
35 U.S.C. § 103(a) in view of the Shealy patent is in error. We will,
accordingly, reverse this rejection.

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Obviousness rejection of Claims 13 and 17
Claims 13 and 17 depend from Claims 8 and 14, respectively. The
Examiner has rejected these claims as being unpatentable over the Shealy
patent discussed above, in view of the teachings of the Asberg patent.
Appellant does not argue that the limitations presented in these claims render
them patentable separate and apart from the independent claims from which
they depend.
We are not presented with any persuasive evidence that the teachings
of the Asberg patent, in combination with the teachings of the Shealy patent,
would render obvious the formation of the two carrier components in Shealy
as a single, one-piece carrier, a claim limitation present in these claims as a
result of their dependency from Claims 8 and 14.
We will reverse the rejection of Claims 13 and 17 under 35 U.S.C.
§ 103(a).

CONCLUSIONS OF LAW
We conclude that Appellant has not established that reversible error
exists in the rejection of Claims 1-3 and 5 under 35 U.S.C. § 102(e).
We conclude that Appellant has established that the rejection of
Claims 8, 9, 11, 14-16, and 18-20 under 35 U.S.C. § 103(a) is in error.
We conclude that Appellant has established that the rejection of
Claims 13 and 17 under 35 U.S.C. § 103(a) is in error.
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DECISION
The decision of the Examiner to reject Claims 1-3 and 5 is
AFFIRMED.
The decision of the Examiner to reject Claims 8, 9, 11, and 13-20 is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

JRG

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